Ade Corp. v. Kla-Tencor Corp.
| Decision Date | 15 August 2003 |
| Docket Number | No. CIV.A.00-892-KAJ.,CIV.A.00-892-KAJ. |
| Citation | 288 F.Supp.2d 590 |
| Parties | ADE CORPORATION, Plaintiff, v. KLA-TENCOR CORPORATION, Defendant. |
| Court | U.S. District Court — District of Delaware |
J. Andrew Huffman, Thomas Lee Halkowski, Fish & Richardson, P.C., Wilmington, DE, for plaintiff/counter-defendant.
Rudolf E. Hutz, Connolly, Bove, Lodge & Hutz, Wilmington, DE, for defendant/counter-claimant.
This is a patent infringement case involving U.S. Patent Nos. 5,226,118 (issued July 6, 1993) ("the '118 patent"), 5,883,710 (issued Mar. 16, 1999) ("the '710 patent"), 6,081,325 (issued June 27, 2000) ("the '325 patent"), 6,118,525 (issued Sept. 12, 2000) ("the '525 patent"), 6,292,259 B1 (issued Sept. 18, 2001) ("the '259 patent"), and 6,215,551 (issued Apr. 10, 2001) ("the '551 patent"). The ADE Corporation ("ADE") is the plaintiff and owner of the '525 and '259 patents. The KLA-Tencor Corporation ("KLA") is the defendant, counter-claimant, and owner of the patents disclose technology used in the detection of defects on the surface of silicon wafers or similar articles.
On August 8, 2002, the Magistrate Judge for this District construed the claims of the 1 objected to portions of the Magistrate Judge's August 8, 2002 decision. On March 13, 2003, this Court addressed some of those objections and construed the remaining objections are addressed here. In addition, the Court resolves the remaining summary judgment motions in the case. The Court reviews the Magistrate Judge's August 8, 2002 decision under Rule 72 of the Federal Rules of Civil Procedure. Jurisdiction is proper under 28 U.S.C. §§ 1331, 1338(a).
A magistrate judge's patent claim construction and decisions on dispositive motions are subject to plenary review. FED. R. CIV. P. 72(b) (dispositive motions); Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) (); Haines v. Liggett Group, Inc., 975 F.2d 81, 91 (3d Cir. 1992) ().
Summary judgment is proper when "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any show that there is no genuine issue as to any material fact and the moving party is entitled to a judgment as a matter of law." FED. R. CIV. P. 56(c). A court draws all reasonable inference in favor of the non-movant. Eastman Kodak Co. v. Image Technical Servs., Inc., 504 U.S. 451, 456, 112 S.Ct. 2072, 119 L.Ed.2d 265 (1992). A material fact is genuinely in dispute when the evidence before a court demonstrates that a reasonable jury could find in favor of the nonmovant. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
ADE objects to the Magistrate Judge's construction of the phrase "oblique zone" as used in the claims of the '525 patent. (D.I. 533 at 5-22.) On March 13, 2003, the Court adopted the Magistrate Judge's construction of that phrase, thus, disposing of ADE's objection. ADE Corp. v. KLA-Tencor Corp., 252 F.Supp.2d 40, 55-62 (D.Del.2003).
KLA objects to the Magistrate Judge's construction of "workpiece", the "scanning" limitation, "central zone", and "comparing said signals". (D.I. 531 at 3-5.) In addition, KLA objects to the Magistrate Judge's denial of KLA's partial summary judgment motion of invalidity of the '525 patent for lack of written description (D.I. 282) and partial summary judgment motion of invalidity of the '525 patent for obviousness (D.I. 335). ADE, in contrast, asserts that those findings by the Magistrate Judge were correct. (D.I. 543 at 1-10.) The Court addresses each contention, in turn.
The Magistrate Judge construed "workpiece" to mean "[a] silicon wafer or similar article susceptible to particle and crystalline originate pit (`COP') defects." ADE Corp., 220 F.Supp.2d at 310-12. The Court adopts that construction, as modified herein.
KLA argues that the Magistrate Judge's construction of "workpiece" renders the use of the word "pit" in the claims interchangeable with the phrase "crystalline originate pit" and, in so doing, rewrites the patent claims. The Court agrees. The claims do not use the phrase "crystalline originate pit". Instead, the claims employ the word "pit". The Court, however, agrees with the remainder of the Magistrate Judge's reasoning. Accordingly, the Court construes "workpiece" to mean a silicon wafer or similar article susceptible to particle and pit, e.g., crystalline originate pit ("COP"), defects.
The Magistrate Judge construed "scanning the surface of the workpiece" to mean ADE Corp., 220 F.Supp.2d at 312-13. The Court adopted the Magistrate Judge's construction in its March 13 2003 decision. ADE Corp., 252 F.Supp.2d at 62-65.
The Magistrate Judge construed "central zone" to mean "a light collecting zone positioned to collect light generally scattered in the normal direction...." ADE Corp., 220 F.Supp.2d at 316-19. The Court adopts that construction.
KLA objects to the Magistrate Judge's construction on the basis that "by not requiring the collection of light in the normal direction, the `central zone' becomes indistinguishable from the `second oblique zone.'" (D.I. 531 at 5.) The Court, however, disagrees. As the Magistrate Judge noted, "[t]he '525 disclosure teaches that the ... [invention] possess more than one light collection apparatus...." ADE Corp., 220 F.Supp.2d at 317. The claims contain no language limiting the "central zone" to the strict collection of light in the normal direction, as asserted by KLA.
The Magistrate Judge construed "comparing said signals" as to "not exclude the functions of normalization and subtraction." ADE Corp., 220 F.Supp.2d at 313-14. The Court adopts that construction.
KLA argues that "comparing said signals" should be construed to limit the functions of "normalization and subtraction." (D.I. 531 at 5.) As the Magistrate Judge noted, however, KLA's bases for arguing for exclusion, i.e., statements made by the inventors during prosecution of the '525 patent, do not warrant the limitation it seeks. ADE Corp., 220 F.Supp.2d at 313-14. Indeed, as the Magistrate Judge concluded, KLA's assertions are taken out of context. Id.
The Magistrate Judge also denied KLA's motion for partial summary judgment of invalidity of the '525 patent for lack of written description (D.I. 282) and KLA's motion for partial summary judgment of invalidity of the '525 patent for obviousness (D.I. 335). ADE Corp., 220 F.Supp.2d at 340-41. The Magistrate Judge thereafter vacated her decision on KLA's motion for partial summary judgment of invalidity of the '525 patent for obviousness. (D.I. 606.) And, in turn, ADE objects to that decision of the Magistrate Judge. (D.I. 618.)
The Court adopts the Magistrate Judge's denial KLA's motion for partial summary judgment of invalidity of the '525 patent for lack of written description (D.I. 282). The Court also finds that the Magistrate Judge properly vacated her decision (D.I. 606) on the KLA's motion for partial summary judgment of invalidity of the '525 patent for obviousness (D.I. 335). That decision, therefore, is also adopted by the Court and ADE's objection to that decision (D.I. 618) is denied. The Court finds, however, that a material question of fact remains as to whether the '525 patented invention is obvious. That is, material questions of fact exist as to what the prior art references cited by KLA teach those of ordinary skill in the art. Accordingly, KLA's motion for partial summary judgment of invalidity of the '525 patent for obviousness (D.I. 335) is denied. Similarly, ADE's cross-motion for partial summary judgment of non-obviousness (D.I. 376) is denied.
Furthermore, to address a continuing dispute between the parties, the Court denies ADE's motion for partial summary judgment that the Eremin paper does not qualify as prior art. (D.I. 321.) The Court finds that material facts remain as to whether the Eremin paper qualifies as prior art.
ADE objects to the Magistrate Judge's finding that the preambles of claims 36 and 43 of the '325 patent do not limit those claims, and ADE also objects to the Magistrate Judge's construction of the phrase "providing a map". (D.I. 533 at 22-35.) Specifically, ADE asserts that the phrase "anomalies, such as particle or pattern defects" in the preambles of claims 36 and 43 limit the claims. (Id. at 29-33.)
KLA asserts that the Magistrate Judge's findings are correct and that ADE's additional grounds for non-infringement of the '325 patent lack merit. (D.I. 545 at 13-18.) In particular, KLA contends that "ADE's objection ... does not address" the Magistrate Judge's findings (id. at 14) and that the Magistrate Judge's construction of "providing a map" is correct because "it was evident from reading the plain language of the claim that `maps' are provided from `stored sensor output signals' and are compared to identify anomalies." (Id. at 16.)
The Magistrate Judge found that the preambles of claims 36 and 43 do not limit the claims and construed the phrase "providing a map" to mean "that...
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